The Sixth Circuit has an opportunity to consider the copyrightability of clothing design elements. A federal court in Tennessee recently held that cheerleading uniforms were not copyrightable because design elements could not be conceptually or physically separated from the uniforms’ utilitarian function. Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-cv-02508 (W.D. Tenn. March 1, 2014). The court granted summary judgment for Star Athletica, which was accused of infringing Varsity Brands’ designs in a 2010 catalog. Varsity Brands has appealed the ruling.

Although the Copyright Act extends protection to “pictorial, graphic, and sculptural works,” protection does not extend to the works’ utilitarian aspects. Clothing, the court noted, has both utilitarian and aesthetic aspects. Design setting forth the shape, style and cut of clothing is not copyrightable. But a design pattern or other ornamentation imprinted on the fabric may be copyrightable if it is capable of existing independently of the utilitarian aspect of the clothing.

Here, the court determined that once the colors, patterns, stripes and other designs typically associated with cheerleading uniforms were removed, the garment ceased to function as a cheerleading uniform. All that remained was a blank silhouette. The court stated that “the utilitarian function of a cheerleading uniform is not merely to clothe the body; it is to clothe the body in a way that evokes the concept of cheerleading.” Thus, the uniforms’ aesthetic aspects had merged with its utilitarian aspects and could not exist independently.

Courts have struggled to determine when a design is separable from a work’s utilitarian aspects, and judges have applied various tests in wrestling with the issue. Although the Sixth Circuit has not yet weighed in, the Tennessee district court found a nonprecedential Second Circuit opinion instructive. In Jovani Fashion, Ltd. v. Fiesta Fashions, the Second Circuit affirmed that the arrangement of decorative sequins, crystals and other elements on a prom dress were not protectable because removing them would “adversely affect the garment’s ability to function as a prom dress, a garment specifically meant to cover the body in an attractive way for a special occasion.” 500 F. App’x 42, 44 (2d Cir. 2012).